IP NEWS

Changes to Canada’s patent and industrial design laws enacted

12/01/2015

On December 17, 2014, the Canadian government took initial steps to proceed with the enactment of significant amendments to Canada’s patent and industrial designs laws, as part of an omnibus budget bill. The actual implementation date for these changes has not been set. We will be monitoring the progress of these amendments and will advise as implementation time lines are ascertained.

Notable changes for patents include:

Convention priority can now be claimed for an application filed up to 14 months after the priority date. If the normal 12 month deadline is missed, the applicant may request an extension if the failure to meet the deadline was unintentional. One should ensure that evidence exists to support the unintentional nature of the missed deadline, since this aspect is subject to review by the Federal Court.

Reinstatement requirements for abandoned applications have been revised. At present, an abandoned application (for example, one which is abandoned for failure to respond to an office action) may be revived merely by requesting reinstatement and paying a fee (presently $200) within one year of the abandonment date. The new provisions will require an explanation of the reasons for the failure to take the required action. As well, the Commissioner must determine that the abandonment occurred despite the due care of the applicant. The Commissioner’s decision is subject to being overturned by a subsequent Federal Court order.

A patent cannot be declared invalid only by reason that the application was deemed to have been abandoned and was not reinstated. This could occur if the Patent Office overlooked a fee payment or other matter and issued a patent despite the missed deadline. However, this “saving” provision does not apply if the Federal Court makes an order as referred to above. This provision applies to applications filed after December 17, 2014.

A patent application may incorporate all or part of a previously-filed application by reference. A request for an incorporation by reference may be filed with the application or up to 6 months later. This could provide “fall-back” protection in the event that an application inadvertently omits content from a priority application.

For certain official fees, if the prescribed fee is not paid by the deadline, the Office will send a notice imposing a two month deadline for the payment. The application will then go abandoned if the prescribed fee and a late fee are not paid by the end of the two month period.

Notable changes for industrial designs include:

The term of registration changes from 10 years after the registration date to the latter of 10 years from the registration date or 15 years from the filing date.

A design must be “novel” to be registered instead of “confounding” with a previously registered design. The 12 month grace period for prior disclosures by the applicant remains.

A design cannot be registered if its features are dictated solely by function or they consist of a method or principle of manufacture or construction.

Design applications may be published prior to registration. The timing of the publication date will be prescribed by regulations, which have not yet been enacted. However, publication must occur within 30 months of the filing date or the priority date, if applicable.

The amendments are included in the Budget Implementation Act II, which is an “omnibus” law intended to implement the Federal budget tabled February 11, 2014.

Many of the details of the new provisions will be implemented by regulations and are not specified in the Act. At this point, proposed regulations relating to the patent and design aspects have not been published. We will be monitoring the upcoming changes and will report further when these have been published.

For more information, please contact author Adrian Zahl. Ridout & Maybee LLP also gratefully acknowledges the contribution of Michael Ionescu to this article.

This article is for information purposes only and does not constitute legal or professional advice.